Trademark

The USPTO remains open for business as normal during the partial Federal government shutdown. According to the USPTO, the agency can use prior-year fee collections to continue normal operations for a few weeks. If these funds are exhausted before the government reopens, however, the USPTO may have to shut down at that time, except for a small staff that will continue handling new applications and IT infrastructure. For further information regarding adjustments to the USPTO’s operating status, it is important to monitor the USPTO website.

The Federal Circuit in Converse, Inc. v. ITC, ___ F.3d___, 2018 WL 6164571 (Fed. Cir. 2018), gave Converse’s trademark case against several shoe companies new life; a new “sole,” if you will. Converse has long been battling Skechers, New Balance, and others, alleging trade dress infringement of its Chuck Taylor All Star shoe shown below (“Chuck Taylor All Star Mark”) both before and after Converse’s registration of the mark in 2013. Two years ago, the International Trade Commission (“ITC”) heard the case and ruled against Converse, leaving a significant scuff on Converse’s trade dress rights. The ITC viewed Converse’s Chuck Taylor All Star Mark as two separate marks—a registered mark and a common law mark—during the alleged infringements before registration and found both marks invalid and unenforceable for not having acquired secondary meaning. Now, the Federal Circuit has vacated the ITC’s ruling, and given Converse another chance to cobble its rights in the Chuck Taylor All Star Mark.

Chuck Taylor All Star Mark

First, the Federal Circuit found the ITC’s approach of viewing Converse’s Chuck Taylor All Star Mark as two separate marks “confusing and inaccurate;” instead, the case should be viewed as concerning a single mark, with different rights arising from common law and federal registration. The court also took issue with the ITC’s assessment of secondary meaning, stating that secondary meaning must be determined as of a specific date, namely, prior to each alleged infringer’s first use. In Converse’s case, the Federal Circuit joined “the majority of circuits” in holding that Converse’s registration entitled it to a presumption that the mark is valid and has acquired secondary meaning, which thereby shifts both burdens to the other parties to prove otherwise. However, the court added a vital knot to this holding: this presumption of secondary meaning only begins as of the date of registration, not earlier. As a result, Converse cannot rely on this presumption of secondary meaning for its claims of infringement occurring before registration. On remand, Converse will have to establish that its mark acquired secondary meaning in the Chuck Taylor All Star Mark before each of the alleged infringing uses occurred.

Considering the main remaining defendants started selling their allegedly infringing shoes well before Converse’s registration of the Chuck Taylor All Star Mark, this finding may have knocked Converse back on its heels. But all hope shouldn’t be lost for Converse. Although the court’s decision may not help its case against the remaining defendants, Converse should be able to lace its arguments in any future proceedings on remand with some of the Federal Circuit’s findings that are more favorable to Converse. For example, the Federal Circuit affirmed the ITC’s finding that Converse’s Chuck Taylor All Star Mark is nonfunctional and criticized the ITC’s overreliance on the defendants’ survey evidence regarding secondary meaning. Of course, the defendants may be arguing on remand that the ITC should reassess whether the products are substantially similar to Converse’s Chuck Taylor All Star Mark. Until the proceedings resume on remand, it will be difficult to predict to which side the ITC will ultimately give the boot.

“By the time we got to Woodstock, we were half-a-million strong.” Woodstock, music and lyrics by Joni Mitchell, recorded by Crosby, Stills, Nash and Young.

The countdown has begun, with less than a year until Woodstock turns 50. Like Watergate a few years later, Woodstock occupies that rarefied world of one-word names that conjure up not just a place or an event, but a cultural watershed. Although Woodstock was not the first music festival of the Summer of Love era, it’s the one that dominates the collective memories of an entire generation, many of whom claim to have wallowed in the mud with the 500,000 souls who actually slogged their way to Yasgur’s farm to hear some of the leading rock, folk, soul, and blues acts of the day. Hendrix electrified with his searing “Star Spangled Banner,” Richie Havens strummed fervently for “Freedom,” Canned Heat celebrated the simple pleasure of “Going Up the Country,” while Country Joe and his Fish echoed the nation’s angst with their sardonic “Fixin’ to Die Rag” (“And it’s one, two, three, what are we fighting for?) All this and more was immortalized in an Oscar® winning documentary that cemented Woodstock as the defining music festival for generations of concert goers.

“All the sailors with their seasick mamas, hear the sirens on the shore.” “For The Turnstiles,” music and lyrics by Neil Young.

Many songs are laden with “hooks,” musical barbs that implant themselves indelibly in the cultural consciousness, like Eric Clapton’s searing guitar riff in “Layla.” But how many hooks are tied to a trademark?

I can think of one. Neil Young’s “Hey, Hey, My, My (“Into the Black”), Neil’s masterpiece from the late ‘70s, complete with crushing guitar chords, a raw and piercing solo on Neil’s feedback-laden “Old Black” Gibson Les Paul, and the defiant refrain “Rock and Roll will never die.” Summing it all up—so much so that it became the album’s title—is the song’s urgent justification for why “It’s better to burn out than to fade away”—”Rust Never Sleeps.”

“Cheer up sleepy Jean, oh what can it mean for a daydream believer?” Daydream Believer, words and music by John Stewart, originally recorded and performed by The Monkees.

The New York Times Magazine recently featured a tale ripped from the comic books of my youth. The story involved mystery, intrigue, villainy, betrayal, desperate living, a fortune won and lost. And what rip-roaring saga would be complete without a trademark dispute?

At the center of this story are “Sea Monkeys,” the amazing critters advertised in the pages of Batman, Superman, and Archie comics. If you’re not of a certain age and don’t know what I’m talking about, here is a vintage ad for the “Monkeys of the Sea:”

“The room was humming harder, As the ceiling flew away, When we called out for another drink, The waiter brought a tray.” A Whiter Shade of Pale by Keith Reid, Gary Brooker (recorded by Procol Harum)

Surprise turned to Schadenfreude last week in trademark land when micro-brewer Lagunitas sued micro-legend Sierra Nevada for trademark infringement. The mark at issue? IPA–a common acronym for the style of beer called “India Pale Ale.” For years, Lagunitas’s IPA packages featured the letters IPA in large, highly stylized script. And Lagunitas saw red when Sierra Nevada changed the packages for its IPA to put those letters front and center:

“Well I came upon a child of God; he was walking along the road.” Woodstock by Joni Mitchell

USA Today reports that three-day passes to Coachella, the mega music festival taking place this weekend and next in a California valley, are commanding nearly $3,000 on the secondary market—more than $2,500 over face value. There’s a reason music fans and other revelers snapped up tickets for both weekends in a matter of hours when they went on sale in January. Coachella is more than just a parade of bands and singers. And indeed, tickets go on sale—and then are gone—before the festival lineups even are announced. So while the prospect of seeing today’s “it” band mingling with yesterday’s legacy acts no doubt fuels the ticket frenzy, it’s the event itself—symbolized by the name, that’s the main attraction for Coachella, its east coast counterpart Bonnaroo, and the scores of other festivals that will dot the concert landscape from April to October. These festivals and others have become brands, and the branding of music festivals is becoming big business transforming the face of the music business itself. Going or gone are the days when most artists tour to promote a new record; today, more often than not, artists put out new records to be in the running for a coveted spot on the festival touring circuit. Playing in front of captive audiences in the tens of thousands sure beats playing in front of a few hundred fans at a smaller club or listening room. This seismic shift has as much to do with festivals like Coachella becoming recognized brands as it does with the quality of the actual performances that grace the multiple stages that are the hallmarks of these mega-festivals. Each of the major summer festivals is immediately identifiable through a distinctive logo, and each nurtures its own unique brand identity. Coachella has its “chill” California desert Spring vibe, while Bonnaroo, set in a dusty field south of Nashville, is known for its grungy, gritty, tent-city terrain and whimsical stage names—“This Stage, That Stage, What Stage, and Which Stage.” And they each have their own visual image to go with their distinctive vibes, as shown above with the Coachella logo.

“Go make it happen. Take the world in a love embrace.” “Born To Be Wild” by Steppenwolf

Flipping through Comcast’s program guide last week, I came across a listing I could not resist. “Easy Rider, ” the 1969 paean to motorcycles, pot, free love, and all the other accoutrements of the Woodstock era. I was thirteen when the film came out, too young to see it in the theater, and definitely too young to join the tens of millions of slightly older members of my generation who claim to have been among the half a million strong who descended on Yasgur’s Farm that August. And though I am sure I managed to catch a screening of “Easy Rider” at some point in my film-going career, most likely at a repertory house like DC’s long departed Circle, Key, or Biograph theaters, my relentless march towards the big 6-0 made it hard to remember whether I’d actually seen this counterculture landmark or was just hallucinating. So, even though the hour was late, and the lure of “Frasier” reruns was nearly gravitational, I pressed OK on my remote and headed out on the highway with Peter Fonda, Dennis Hopper, and Jack Nicholson; it was a great ride for about fifteen minutes, as Fonda and Hopper cavorted with a tie-dyed, braided clan of commune-dwellers, all drawn to Fonda’s character, especially the women-folk. But as a troupe of itinerant actors begged to sing for their supper, my attention span sputtered, my craving for the two Doctors Crane too great. So I flipped back to the Hallmark Channel where I drifted off to Kelsey Grammer’s mellifluous Brahmin accent.

It’s been a tumultuous, if not downright difficult, year for Men’s Wearhouse, the men’s clothing chain known as much for its founder as its fashions. For years, television ads for this decidedly un-high end haberdashery featured the voice and dashing visage of George Zimmer, the avuncular eminence gris of good grooming who vanquished doubts–about our wardrobes, about ourselves–by ending each commercial with this simple but powerful promise: “You’re gonna like the way you look.” For George Zimmer, this was no mere idle quip or empty sentiment. No. He gave us his word, his bond: “I guarantee it!”

One would think that in this age of anonymous commerce, much of it conducted across the empty ether of the Internet, having a name, a face, and a voice we had come to trust, even befriend, would be a corporate asset of incalculable value.

U.S federal court in Washington State tosses TRADER JOE’S lawsuit aimed at Vancouver, Canada’s PIRATE JOE’s food store, which buys genuine TRADER JOE’S items purchased in the U.S. and resells them in a South Pacific–themed grocery located in Vancouver B.C. To protest being sued, the Canadian grocer dropped the “P” and became “_IRATE JOE’S”

WHAT ARE THE ISSUES

Does a U.S. Court have power (subject matter jurisdiction) to decide allegations of infringement involving conduct entirely outside the U.S.?

Can U.S. trademark rights “cross the border?”

WHAT’S AT STAKE

TRADER JOE’S ability to stop a self-declared trademark “Pirate” who is no ordinary “Joe,” but rather one who makes no bones about being a pirate who parrots the TRADER JOE’s mystique